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The same judge ruled that an apparent ambiguity in the patent and specification might be cleared up by reference to the affidavit of the patentee at the time of taking out the patent."

It is an established doctrine that divers valid patents cannot subsist for the same thing to different persons, or even to the same person." The question then arises when divers patents are so issued, whether all, or only a part of them, are void, and if only a part, whether the first or last is in force. It was held in Massachusetts, where a machine was patented by one of two inventors, who at the time of taking out the patent supposed himself to be the sole inventor, and subsequently he joined the other in taking out a joint patent, that, as he had not assigned the first patent, being still proprietor of it, the joining in the second, was, in effect, a cancelling of the first. In a case relating to the same invention, Mr. Justice Story held that a grant of a subsequent patent for an invention, is an estoppel to the patentee to set up any prior one for the same invention; and he adds, "I have very great doubts, whether, when a patent is once granted to any person for an invention, he can legally acquire any right under a subsequent patent for the same invention, unless his first patent be repealed for some original defect, so that

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* Pettibone v. Derringer, 4 Wash. C. C. R. 215, Coke's Dig. 532. 'Barrett v. Hall, 1 Mason's R. 429.

Stearns v. Barrett, 1 Pick. R. 443.

it might truly be said to be a void patent." Accordingly, where the patentee has, without first surrendering his patent, taken out a second, either solely or jointly with another, on the fact appearing, he cannot avail himself of the first, if he can of either.

The question occurs whether the production of the patent proves any thing more than the fact of the grant of it, and whether the plaintiff must next proceed to prove his right to such a grant, by showing that the invention is his own, is new and useful, and that he has reduced it to practice. On this subject Mr. Justice Buller said, "I do not agree with the counsel who have argued that it was not necessary for the plaintiff to give any evidence to show what the invention was, and that the proof that the specification was improper lay on the defendant; for I hold that a plaintiff must give some evidence to show what his invention was, unless the other side admit that it has been tried and succeeds. He must show in what his invention consists, and that he produced the effect proposed by the patent in the manner specified. Slight evidence of this, on his part, is sufficient."'10

9 Barrett & al. v. Hall & al. 1 Mason's R. 473.

10 Turner v. Winter, 1 T. R. 606; and see Gods. on Pat. 178, who cites Boville v. Moore, Dav. Pat, Cas. 399, and Manton v. Manton, id. 348.

According to the practice in England, the inventor on petitioning for a patent, is required to make affidavit to his petition." The act of Congress of 1836, s. 6, requires that the applicant for a patent shall make oath or affirmation that "he does verily believe that he is the original and first inventor or discoverer of the art, machine, composition or improvement for which he solicits a patent, and that he does not know or believe that the same was before known or used." The petition in the usual form in England alleges that the petitioner is the true and first inventor of the thing for which he solicits a patent, and that it has never before been used. both in England and the United States, this affidavit, where there is no conflicting claim, is the evidence on which the patent is granted. But according to Mr. Justice Buller, though it is evidence in the offices of the executive branch of government, it is not such in a court of justice, and the plaintiff must proceed to prove his case without any presumption in his favor.

Now

In case of proceedings against the patentee for a repeal of the patent, under the act of 1793, s. 10, now repealed, Mr. Justice Story said: "In respect to the proof who was the inventor, the possession of the patent was prima facie evidence for the defend

11 Gods. on Pat. 139.

ant, at least upon this process; process;"'12 thus apparently implying a query whether the same presumption does not arise in favor of the patentee in other actions. But it is not a matter of great practical importance, whether such a presumption exists in favor of the patentee, since the slight prima facie evidence requisite may doubtless easily be obtained in support of any patent for which any possible pretence could be made out. The requisition by the law that the applicant shall make affidavit of a fact, seems to be a sufficient ground of presuming his affidavit to be true until the contrary is shown.

The fact of the novelty of the machine or method is not, as has already been suggested, necessarily involved in, and does not necessarily follow from, that of its invention by the patentee, for the same thing may be invented by different persons independently of each other. Proof, therefore, that the patentee invented the thing, does not, of itself, conclusively establish its novelty. Under the former law, the applicant, in the United States, only made affidavit of the invention, not that the thing was before unknown, as in England.

According to the course of proceeding in a case before Mr. Justice Washington, it was assumed that

12 Stearns v. Barrett, 1 Mason's R. 153.

the patent was not, itself, prima facie evidence of the novelty, for he ruled that a statement by a witness, that he had not seen or heard of the manufacture before he saw it at the workshop of the patentees, was sufficient evidence of the novelty, until it was contradicted.13 This was assuming that the plaintiff must, in the first instance, give evidence of the novelty, for, otherwise, the whole evidence would have been superfluous; so there would have been no question as to its sufficiency. This doctrine is also assumed as matter of practice in another case before the same judge." By the law of 1836, the applicant makes oath as to the novelty of the invention, so that if the patent is prima facie evidence that the patentee was the inventor, it might be so of the novelty of the invention.

It is sufficient if it appear that the thing patented had not been known or used before the invention by the patentee; as distinguished from the time of his application for a patent.

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As to delay to take out a patent, and the extent to which the machine may have got into use in the meantime, this may raise the question of an aban

13 Pennock and Sellers v. Dialogue, 4 Wash. C. C. R. 538. 14 Dixon v. Moyer, 4 Wash. C. C. R. 68.

15 Supra. p. 152; Treadwell and Watson v. Bladen, 4 Wash. C. C. R. 708; Evans v. Weiss, 2 Wash. C. C. R. 342; Goodyear v. Matthews. 1 Paine's R. 348; 1 Gallison's R. 438; Dixon v. Moyer, 4 Wash. C. C, R. 68.

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